Common use of Licensor Patents Clause in Contracts

Licensor Patents. Each Party shall promptly notify the other Party in writing of any alleged or threatened infringement of the Licensor Patents by a Third Party in the Territory of which such Party becomes aware (the “Licensor Patent Infringement”) (including alleged or threatened infringement based on the development, commercialization, or an application to market a product containing a Licensed Compound in the Territory (the “Product Infringement”)). As between the Parties but subject to the rights of Dartmouth under the Dartmouth Agreement and Dartmouth and UT under the UT Agreement, Licensee shall have the first right, but not the obligation, to prosecute any Product Infringement in the Licensee Territory (the “Licensee Prosecuted Infringements”) at its sole expense. In the event Licensee prosecutes any Licensee Prosecuted Infringement, Licensor shall have the right to joint as a party to such claim, suit or proceeding in the Licensee Territory and participate with its own counsel at its own expense, provided that Licensee shall retain control of the prosecution of such claim, suit or proceeding. During any such claim, suit or proceeding, Licensee shall: (i) provide Licensor with drafts of all official papers and statements (whether written or oral) prior to their submission in such claim, suit or proceeding, in sufficient time to allow Licensor to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate Licensor comments on all such official papers and statements; (iii) allow Licensor the opportunity to participate in the preparation of witnesses and other participants in such claim, suit or proceeding; and (iv) not settle any such claim, suit, or proceeding except in a manner that it believes in good faith is in the best interests of the Licensed Products (without taking into consideration products in Licensee’s portfolio that are not Licensed Products). If Licensee does not take commercially reasonable steps to prosecute a Licensee Prosecuted Infringement (i) within [***] days following the first notice provided above with respect to the Licensee Prosecuted Infringement, or (ii) provided such date occurs after the first such notice of the Licensee Prosecuted Infringement is provided, [***] Business Days before the time limit, if any, set forth in appropriate laws and regulations for filing of such actions, whichever comes first, then, Licensor may prosecute the Licensee Prosecuted Infringement. As between the Parties, Licensor shall have the sole right, but not the obligation, to: (a) prosecute any Licensor Patent Infringement (including a Product Infringement) in the Licensor Territory at its own expense in its sole discretion, and (b) prosecute any Licensor Patent Infringement in the Licensee Territory that is not a Licensee Prosecuted Infringement.

Licensor Patents. Each Party Licensor shall promptly notify have the other Party in writing of any alleged or threatened infringement of first right, but not the obligation, to prepare, file, prosecute and maintain Licensor Patents outside the Territory while both Parties further agree and acknowledge that, in order to facilitate the performance of Business by a Third Party Licensee under the license granted in the Territory of which such Party becomes aware (the “Licensor Patent Infringement”) (including alleged or threatened infringement based on the development, commercialization, or an application to market a product containing a Licensed Compound in the Territory (the “Product Infringement”Article 2.1(a)). As between the Parties but subject to the rights of Dartmouth under the Dartmouth Agreement and Dartmouth and UT under the UT Agreement, Licensee shall have the first right, but not the obligation, to prepare, file, prosecute any Product Infringement and maintain Licensor Patents in the Territory, including any related interference, re-issuance, re-examination and opposition proceedings with respect thereto, unless Licensee Territory (is not permitted to do so by the “Licensee Prosecuted Infringements”) Applicable Laws. During the Term, either Party shall cooperate, at its sole expensethe requesting Party’s cost, in connection with the prosecution of patent applications included within such Licensor Patents, including without limitation, periodically through SC inform the other Party of the status, all material steps and developments with regard to the preparation, filing, prosecution and maintenance of the Licensor Patents in the applicable territories. In Specifically, in the event that Licensor decides to file an original Licensor Patent application with a competent patent authority outside the Territory, it shall promptly advise Licensee prosecutes and further provide Licensee with a copy of material filing and communications made or to be made to the applicable patent authorities in order to facilitate or enable Licensee’s filing for a Licensor Patent in the Territory on the same basis of such given original Licensor Patent. If either Party decides that it is no longer interested in filing, maintaining, or prosecuting a particular Licensor Patent on a country-by-country basis in the applicable territories during the Term, such Party shall inform the other Party of such decision promptly in writing and, in any Licensee Prosecuted Infringementevent, Licensor so as to provide the other Party a reasonable amount of time to meet any applicable deadline to establish or preserve such patent in such country or region of the territory. The other Party shall have the right to joint as a party to assume responsibility for continuing the prosecution, maintenance or defense of such claim, suit patent in such country or proceeding in the Licensee Territory region at its sole cost and participate with expense and through counsel of its own counsel at its own expensechoice, provided that Licensee shall retain control it responds with its willingness to do so within thirty (30) days upon receipt of the prosecution notice. Upon transfer of such claimresponsibility to the other Party, suit the Party who decides to abandon or proceeding. During any such claimallow to lapse, suit or proceedingotherwise determines not to prosecute, Licensee shall: (i) provide the given Licensor with drafts Patent shall promptly deliver copies of all official papers and statements (whether written or oral) prior necessary files related to their submission in such claim, suit or proceeding, in sufficient time to allow Licensor to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate Licensor comments on all such official papers and statements; (iii) allow Licensor the opportunity to participate in the preparation of witnesses and other participants in such claim, suit or proceeding; and (iv) not settle any such claim, suit, or proceeding except in a manner that it believes in good faith is in the best interests of the Licensed Products (without taking into consideration products in Licensee’s portfolio that are not Licensed Products). If Licensee does not take commercially reasonable steps to prosecute a Licensee Prosecuted Infringement (i) within [***] days following the first notice provided above patent with respect to which responsibility has been transferred and shall take all actions and execute all documents reasonably necessary for the Licensee Prosecuted Infringementother Party to assume such prosecution, maintenance or (ii) provided such date occurs after the first such notice of the Licensee Prosecuted Infringement is provided, [***] Business Days before the time limit, if any, set forth in appropriate laws and regulations for filing of such actions, whichever comes first, then, Licensor may prosecute the Licensee Prosecuted Infringement. As between the Parties, Licensor shall have the sole right, but not the obligation, to: (a) prosecute any Licensor Patent Infringement (including a Product Infringement) in the Licensor Territory at its own expense in its sole discretion, and (b) prosecute any Licensor Patent Infringement in the Licensee Territory that is not a Licensee Prosecuted Infringementdefense.

Licensor Patents. Each Party shall promptly notify the other Party in writing of any alleged or threatened infringement of the Licensor Patents by a Third Party in the Territory of which such Party becomes aware (the “Licensor Patent InfringementInfringement ”) (including alleged or threatened infringement based on the development, commercialization, or an application to market a product containing a Licensed Compound in the Territory (the ““ Product InfringementInfringement ”)). As between the Parties but subject to the rights of Dartmouth under the Dartmouth Agreement and Dartmouth and UT under the UT Agreement, Licensee shall have the first right, but not the obligation, to prosecute any Product Infringement in the Licensee Territory (the ““ Licensee Prosecuted InfringementsInfringements ”) at its sole expense. In the event Licensee prosecutes any Licensee Prosecuted Infringement, Licensor shall have the right to joint as a party to such claim, suit or proceeding in the Licensee Territory and participate with its own counsel at its own expense, provided that Licensee shall retain control of the prosecution of such claim, suit or proceeding. During any such claim, suit or proceeding, Licensee shall: (i) provide Licensor with drafts of all official papers and statements (whether written or oral) prior to their submission in such claim, suit or proceeding, in sufficient time to allow Licensor to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate Licensor comments on all such official papers and statements; (iii) allow Licensor the opportunity to participate in the preparation of witnesses and other participants in such claim, suit or proceeding; and (iv) not settle any such claim, suit, or proceeding except in a manner that it believes in good faith is in the best interests of the Licensed Products (without taking into consideration products in Licensee’s portfolio that are not Licensed Products). If Licensee does not take commercially reasonable steps to prosecute a Licensee Prosecuted Infringement (i) within [***] days following the first notice provided above with respect to the Licensee Prosecuted Infringement, or (ii) provided such date occurs after the first such notice of the Licensee Prosecuted Infringement is provided, [***] Business Days before the time limit, if any, set forth in appropriate laws and regulations for filing of such actions, whichever comes first, then, Licensor may prosecute the Licensee Prosecuted Infringement. As between the Parties, Licensor shall have the sole right, but not the obligation, to: (a) prosecute any Licensor Patent Infringement (including a Product Infringement) in the Licensor Territory at its own expense in its sole discretion, and (b) prosecute any Licensor Patent Infringement in the Licensee Territory that is not a Licensee Prosecuted Infringement. Specific terms in this Exhibit have been redacted because such terms are both not material and are of the type that the Company treats as private or confidential. These redacted terms have been marked in this Exhibit with three asterisks [***].

Licensor Patents. Each Party shall promptly notify (a) The Parties acknowledge that the other Party in writing of any alleged or threatened infringement patents and patent applications set forth on Schedule 1.42 are the subject of the Existing Licenses. For so long as such Existing Licenses are in effect, such patents and patent applications are subject to certain priority and consent rights related to prosecution, enforcement and abandonment as provided in the Existing Licenses. (b) Checkmate shall bear [***] of the costs and expenses incurred after the Effective Date of filing, prosecuting and maintaining Licensor Patents by which have claims which are necessary or useful for the research, Development, manufacture, use or Commercialization of a Third Party in Licensed Product; provided that, if Licensor grants or has granted rights to any Licensor Patents which are necessary or useful for the Territory research, Development, manufacture, use or Commercialization of which such Party becomes aware (the “Licensor Patent Infringement”) (including alleged or threatened infringement based on the development, commercialization, or an application to market a product containing a Licensed Compound to Third Parties in addition to [***] and to Checkmate under any Licensor Patents in fields other than the Territory Field, each such Third Party shall share equally [***] Checkmate in such costs and expenses incurred after the Effective Date. (the “Product Infringement”)). As between the Parties but subject c) If Licensor receives notice from [***], pursuant to the rights of Dartmouth under the Dartmouth Agreement and Dartmouth and UT under the UT Agreementrelevant Existing Licenses, Licensee shall have the first right, but that [***] has elected not the obligation, to file or to continue to prosecute or maintain a Licensor Patent in any Product Infringement country, then Licensor shall notify Checkmate in the Licensee Territory (the “Licensee Prosecuted Infringements”) at writing promptly following its sole expensereceipt of such notice. In the event Licensee prosecutes any Licensee Prosecuted Infringementsuch case, Licensor Checkmate shall have the right to joint as pursue the filing or support the continued prosecution or maintenance of such Licensor Patent in Licensor’s name using a party mutually agreeable patent attorney or law firm. Licensor shall provide to Checkmate reasonable assistance in prosecuting Licensor Patents to the extent possible, including providing such claimdata in Licensor’s Control that is, suit or proceeding in the Licensee Territory and participate with its own counsel at its own expenseCheckmates reasonable judgment, provided that Licensee shall retain control of needed to support the prosecution of a Licensor Patent. If Checkmate elects to continue such claimprosecution or maintenance, suit or proceeding. During then Checkmate shall bear the costs and expenses of filing, prosecuting and maintaining the applicable Licensor Patents incurred after such election; provided that, if Licensor grants rights to any Third Parties under any Licensor Patents in fields other than the Field, each such claim, suit or proceeding, Licensee shall: (i) provide Licensor Third Party shall share equally with drafts of all official papers and statements (whether written or oral) prior to their submission Checkmate in such claim, suit costs and expenses. (d) If Licensor has the right to review and provide comments or proceeding, in sufficient time suggestions to allow Licensor to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate Licensor comments on all such official papers and statements; (iii) allow Licensor the opportunity to participate in the preparation of witnesses and other participants in such claim, suit or proceeding; and (iv) not settle any such claim, suit, or proceeding except in a manner that it believes in good faith is in the best interests of the Licensed Products (without taking into consideration products in Licensee’s portfolio that are not Licensed Products). If Licensee does not take commercially reasonable steps to prosecute a Licensee Prosecuted Infringement (i) within [***] days following or any other Third Party Licensees of Licensed Products regarding the first notice provided above prosecution or maintenance of Licensor Patents in any country. Licensor agrees to provide Checkmate with respect the opportunity to the Licensee Prosecuted Infringement, or (ii) provided such date occurs after the first such notice of the Licensee Prosecuted Infringement is provided, provide its comments and suggestions to Licensor and Licensor agrees to use its best efforts to provide Checkmate’s comments and suggestions to [***] Business Days before the time limit, if any, set forth in appropriate laws and regulations for filing or any other Third Party Licensees of such actions, whichever comes first, then, Licensor may prosecute the Licensee Prosecuted Infringement. As between the Parties, Licensor shall have the sole right, but not the obligation, to: (a) prosecute any Licensor Patent Infringement (including a Product Infringement) in the Licensor Territory at its own expense in its sole discretion, and (b) prosecute any Licensor Patent Infringement in the Licensee Territory that is not a Licensee Prosecuted InfringementLicensed Products.